This week in IP: UPC is ‘done deal’, WIPO clocks 50,000 squatters, NY ‘copyright troll’ suspended

German court unlikely to accept second UPC challenge, say counsel

The German Federal Constitutional Court would be unlikely to accept a second constitutional challenge to the Unified Patent Court even if it were filed, according to lawyers.

It means that after several years of waiting, the UPC could be entering its final stretch towards ratification.

On November 26 the Bundestag approved a draft ratification act with the necessary two-thirds majority. The next step is a vote in the upper house, the Bundesrat, on December 18, when the agreement is expected to pass.

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Other Managing IP stories published this week include:

• The 50 most influential people in IP 2020
• COVID pledge co-founder: ‘Only sharing can effect global change’
• Eli Lilly counsel reflects on twists and turns of Alimta lawsuits
• UK lawyers avoid being ‘short changed’ over audience rights
• Vigilance key for drug innovators under China linkage regime
• How Intel’s Vanessa Bailey fights for IP policy – and diversity
• Arthrex chief stoked by SCOTUS suit, but not at disquiet caused
• 'You have to compromise': Avanci on licensing challenges

WIPO clocks 50,000 UDRP cases

WIPO has registered the 50,000th cybersquatting case under its Uniform Domain Name Dispute Resolution Policy, it was announced this week – two decades after the service was launched.

The UDRP, managed by WIPO’s Arbitration and Mediation Center, was created in 1999 and is used to combat abuse of IP owners’ trademarks within domain names.

The landmark number was reached on November 20, according to WIPO. The 50,000 includes almost 91,000 domain names, and parties from more than 180 countries.

In UDRP cases, a domain name is transferred to the trademark-owning complainant party if it is determined to have been registered in bad faith.

WIPO director general Daren Tang said: “The UDRP is an essential tool to help protect internet users around the world against online deception and fraud.

“The 50,000th case just received by WIPO shows that the UDRP system remains as relevant to global consumer protection as it was when WIPO proposed it over 20 years ago.”

According to WIPO, domain name registries have reported an increase in the number of domain names registered since the start of the COVID-19 pandemic.

And cybersquatting cases have increased since the start of the pandemic, WIPO said. From January through October 2020, WIPO handled 3,405 cases, an 11% increase over the same period in 2019.

Erik Wilbers, director of the WIPO Arbitration and Mediation Center, said: “With a greater number of people spending more time online, cybersquatters are finding an increasingly target-rich environment.

“Rights owners, in the meantime, are stepping up enforcement on the internet as they further shift to marketing and selling online.”

‘Copyright troll’ Richard Liebowitz suspended from Southern District of New York

A New York lawyer notorious for filing low-value copyright cases on behalf of photographers was suspended from practising law in the Southern District of New York by the court’s grievance committee this week.

Richard Liebowitz, founder of the Liebowitz Law Firm in New York, was suspended by the Manhattan-based federal court in an order issued on Monday, November 30, pending the outcome of an investigation of charges brought against him.

The order, written by District Judge Katherine Polk Failla, set out that an interim suspension was necessary to “protect the public” because of Liebowitz’s “unwillingness to change despite 19 formal sanctions and scores of other admonishments and warnings from judges across the country”.

Failla wrote: “After careful deliberation, the committee is unanimously of the view that the charges are strongly supported by the record. What is more, the committee is unanimously of the view that interim disciplinary measures against the respondent must be put in place immediately.”

Since 2017, Liebowitz has filed more than 1,000 lawsuits in the Manhattan-based federal court, more than any other lawyer. He has also been sanctioned by courts numerous times, including in a 2018 decision in which Judge Denise Cote went as far as to call him a “copyright troll”.

In one case this summer, the copyright lawyer was ordered to pay $100,000 in sanctions for various violations, including falsely claiming that the copyright in the image he was suing over had been formally registered when the case was filed.

In the US, works must be registered with the Copyright Office to get full protection under law.

Liebowitz has defended his actions and business model in the past, claiming that he was simply protecting the rights of photographers whose images were used without a licence.

Comments pour in over USPTO’s discretionary denial review

As of this week, the USPTO has received more than 760 comments on the discretion it should have to institute trials before the Patent Trial and Appeal Board.

The office published a request for comment on October 20 – for which the deadline was yesterday, December 3 – to incorporate responses into its decision to either codify or modify its current institution policies, such as the NHK-Fintiv rule.

The intellectual property office asked commenters to consider how it should approach denials in cases where claims had been previously challenged in another petition, when a patent was subject to other proceedings in a district court or the International Trade Commission, and when there was more than one petition filed around the same time on the same patent.

Tech companies have disagreed with how the USPTO should approach discretionary denials. For example, online map company Mapbox wrote that it strongly opposed any effort to codify the USPTO’s current policies and practices regarding discretionary denials of institution.

Meanwhile Senator Thom Tillis from North Carolina, chair of the Senate’s IP subcommittee, submitted a letter backing the changes that USPTO director Andrei Iancu made to the PTAB. Tillis added that he supported codifying Iancu’s actions in federal regulations.

MSF challenges EU on SPCs

This week, Médecins Sans Frontières – also known as Doctors Without Borders – challenged the European Commission’s proposal for a simplified regime on supplementary protection certificates.

The Commission claims that SPCs are necessary to help incentivise innovation by allowing companies to recuperate the time they lose on their patents because of the regulatory approval process.

However, MSF has stated that SPCs are a barrier to access to medicine because they keep drug prices artificially high by extending patent monopolies for five years.

In a peer-reviewed study of the treatment for Hepatitis C and cancer, MSF argued that pharma innovators did not need the extra five years of patent protection to recuperate R&D spending, and provided evidence that SPCs left some people in Europe without the medicine they needed.

An evaluation of SPCs published by the Commission on November 25 showed that European taxpayers spend an extra €37 billion ($45 billion) on medication because of SPCs.

Dimitri Eynikel, EU policy adviser for the MSF Access Campaign, said: “Supplementary protection certificates unnecessarily extend pharmaceutical corporations’ monopolies, which keep lifesaving medicines out of people’s hands.

“Our analysis has shown that SPC exclusivity led to high medicine prices in European countries and delayed price-lowering generic competition. We urge the European Commission to get rid of the SPC system, that is nothing but an unnecessary cost for society which may cause avoidable suffering or deaths."

Clarivate expands in Korea, secures licence in China

Clarivate Analytics, a specialist in IP data, has acquired South Korean patent research company Hanlim IPS.

The deal, announced on Tuesday, December 1, allows Clarivate to tap into the increasingly important Korean patent market. From 2018 to 2019, Patent Cooperation Treaty filings there jumped nearly 13%, the steepest rise for any country.  

According to the announcement, Clarivate is now strategically positioned to address this rapid growth in Korea and for customers in other jurisdictions looking to file there.

Jeff Roy, IP group president at Clarivate, said: “Asia is an important hub for innovation, and by joining forces with Hanlim IPS, we are better positioned on our mission to be a trusted, indispensable partner to innovators worldwide.”

Just a week earlier, on November 24, Clarivate announced progress in the Chinese market, this time on domain names. The company’s subsidiary MarkMonitor is now licensed to sell domain names in China, which accounts for a fifth of the world’s four billion internet users.

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